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Enforcement of IPRs in Kenya


Enforcement of IPRs
Kenya had one of the biggest counterfeit product markets in East Africa, and due to its borders with Somalia, Uganda, and Tanzania, and its proximity to the ocean and to Asia, it is considered a key distribution point for fakes - with many goods coming from India and China.
The five most-counterfeited products in Kenya include alcoholic beverages, drugs and medicines, cosmetics, soaps and detergents, and hair products.
The main legal instruments are as follows:
a) The Industrial Property Act of 2001
b) The Copyright Act of 2001
c) The Trade Marks Act (which is currently being reviewed)
d) The Seeds and Plant Variety Act
e) The Trade Descriptions Act
f) The Weights and Measures Act
g) The Counterfeit of Goods Bill
Other laws that are used to tackle counterfeit and piracy where applicable are the Penal Code, the Criminal Procedure Code, the Evidence Act, the Civil Procedure Act, and to a certain extent the Customs and Excise Act (now known as the East African Customs Union Act).
Copyright, Trademarks, Plant Varieties, and Patents are the different types of IPRs protected by IPR enforcement in Kenya.
Where an infringement proceeding is to be made, it is required to file the following set of documents, which should be prepared before instituting the same to avoid any unnecessary delays:
a) A list of witnesses to be called at the trial;
b) Witness statements signed by the witnesses (except expert witnesses); and
c) The copies of documents to be relied on at the trial.
Furthermore, trademark registration is a prerequisite to the institution of an infringement action based on any such mark.
The Limitation of Actions Act provides the limitation periods for different claims as follows:
  • 06 years for contractual claims
A) Government Authorities - Yes
B) Police Officials - Yes
C) Judiciary - Yes
D) Customs - Yes
A) Injunctions - Yes
B) Monetary Compensation - Yes
C) Raids - Yes
D) Seizures - Yes
E) Destruction - Yes
The time it takes to conclude a case before the judicial bodies that handle IP matters varies depending on a number of factors, ranging from the availability of dates in the court diary to the commitment of the parties to an expeditious disposal of the case. Cases before the IPT take an average of01 year to conclude, though it may take a considerably longer time in many cases. Proceedings before the Registrar on average take 02 years, while typical High Court cases take 02 to 03 years to be concluded; although the actual timelines may, on a case-by-case basis, be considerably longer or shorter.
A) Responsible Authority - There are no specialized divisions of the High Court or the Court of Appeal that deal with the IP matters. While hearing IP matters in the first instance and on appeal, the High Court is presided over by one judge; however, the Chief Justice has power to direct that an appeal be heard by more than one judge of the High Court.
B) Imprisonment Term - Industrial property: 05 years; Copyright: up to 10years; Trademark: up to 05 years; Trade Descriptions: up to 02 years.
C) Monetary Fine - Industrial Property: Kenya Shillings 50 000/-(about US$ 700); Copyright: Kenya Shillings 800 000/-(about US$ 10,000); Trademarks: Kenya Shillings 200 000/-; Trade Descriptions: Kenya Shilling 2,000,000/-
None of the Acts governing IP in Kenya provide for methods of alternative dispute resolution (ADR). However, there is nothing that stops the parties in court proceedings from mutually agreeing to arbitration or other forms of ADR to resolve their disputes.
The Kenya Network Information Centre (KENIC) is charged with the administration of the country-code top-level domain (ccTLD) for Kenya (‘.ke’). KENIC’s Alternative Domain Name Dispute Resolution Policy (ADRP) provides for voluntary alternative dispute resolution proceedings for disputes concerning the Kenyan ccTLD.
The remedies available under border control measures (customs) in Kenya include destruction of goods, fine, and imprisonment not exceeding 05 years, but the same may be extended for subsequent convictions of up to 15 years
The goods will be released for commercial access if an IP rights holder abuses the enforcement measures in Custom Recordal of IPRs.
Court Proceedings
There have been some challenges. First is the lack of sufficient resources, lack of capacity among investigators or law enforcers, among prosecutors and even among judicial officers. Second is the general lack of knowledge and information on the IP laws. Third is the issue of identification of counterfeit and pirated products. Fourth is the cross border piracy fuelled by weak or non-existent laws and enforcement mechanisms in various jurisdictions across Kenya.
Enforcement of IPRs continues to pose a challenge to the rights holders. Pirated and counterfeit products in Kenya present a major impediment to businesses operating in the country. Industry estimates that piracy and counterfeiting of business software, records, music, consumer goods, and electronics, such as mobile phones and pharmaceuticals, in Kenya cost the firms over $300mn in lost sales annually.